Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-4, 6-14 and 16 are pending in this application.
Election/Restrictions
Applicant’s election with traverse of Group I and a single disclosed species (Compound 294) in the reply filed on 04/03/2026 is acknowledged.
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The traversal is on the ground(s) that “claim 15 of Group II has been cancelled and claims 11-14 are drawn to a method of treatment using the compound of Formula I”. The examiner disagrees with applicant’s argument. Applicants simply deleted one Group and introduced a new Group II. The amended claims 11-13 are drawn to a method of treatment and would replace the original Group II. Groups I-II lack unity of invention. The special technical feature of Group II involves a therapeutic technique and additional ingredients that is not present in the special technical feature of Group I. Furthermore, coexamination of the additional group would require search of subclasses unnecessary for the examination of the elected claims. Therefore, coexamination of the additional inventions would require a serious additional burden of search.
The requirement is still deemed proper and is therefore made FINAL.
Previously, the examiner search the elected species and found no prior art. The search was expanded and stopped when a prior art was found. Applicants overcome the prior art raised in the previous Office Action dated 04/30/2026.
Applicants amended the claims on 07/30/2026 and the search was continued and stopped again when a prior art was found.
Response to Amendment
3. Applicant’s amendment filed 07/30/2026 in response to the previous Office Action (04/30/2026) is acknowledged. Rejection of claims 1-4 and 6-7 under 35 U.S.C. 102(a)(1) (item 4) has been obviated. Even though applicants overcome the prior art rejection by claim amendment that includes a negative proviso, said amendment raises new issue that needs further rejection.
Claim Rejections - 35 USC § 102
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
5. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
6. Claims 1-2, 4, 6 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naruto et al. WO 2002064558 A2. Cited reference teaches the following prior art compound that is the same as applicants when applicants Formula I has the following substituents: R1 = alkyl; R2 = -NO2; R3 = -NH-; and Y = aromatic heterocycle having a N and S (1,3-thiazole ring).
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Since the prior art compound shown above is the same as applicants, a 102(a)(1) rejection is proper. Note that aromatic heterocycle or heteroaryl embraces thiazolyl ring according to page 7 of the specification.
Claim Rejections - 35 USC § 112
7. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
8. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
9. Claims 1-4, 6-9 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There has been recited two provisos in claim 1. The first proviso “if X is -NH-, it is substituted with Y” has descriptive support since it is obvious that X = -NH- has to be substituted by Y. However, the second proviso “X is amino(-NH-) ………… with the proviso that X is not piperidinyl”, but said provisos lack description. The concept of the definition of X is 5- to 7-membered non aromatic heterocycle that excludes X = piperidinyl is a new concept. Even a negative limitation requires description, Ex Parte Grasselli, 231 USPQ 393.
Allowable Subject Matter
10. Claim 16 is allowed.
Information Disclosure Statement
11. Applicant’s Information Disclosure Statement, filed on 07/30/2026 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kahsay Habte/
Primary Examiner, Art Unit 1624
Prosecution Insights